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Job Description

Counsel Trademarks, Copyright and Designs

Play an active role in the biggest transformation in the history of Phillip Morris International. We are committed to an impactful and dramatic change replacing cigarettes with cutting edge smoke-free products. Are you a solicitor or trademark attorney qualified in the UK or equivalent? Are you driven by getting things done and making a difference? Do colleagues appreciate your collaboration, contribution and performance in the team? If yes, this job might just be for you. We are currently hiring a Counsel / Trademark Manager to join our Trademark, Design and Copyright team. You will have IP experience gained working in the IP department of a law firm and/or in-house in the trademark department of an international company. THE OPPORTUNITY PMI’s Trademark Copyright and Design group is spread over four locations around the world: Lausanne, London, New York and Hong Kong. We manage all of our company’s trademarks and designs as well as advising on copyright and domain name issues. You will join the team based in London. We are currently in Hammersmith but will be moving to new offices in central London in 2019. You will report to a Senior Counsel/Director and support our brand building and Reduced Risk Product clients. Specific responsibilities include: • Advise on trademark portfolio management. • Advise the business on its day-to-day trademark, design and copyright queries. • Work closely with internal clients and outside counsel to review and clear new pack designs, marketing material, innovations, main brands, sub-brands, product features, slogans and logos, which includes conducting online preliminary searches and reviewing and reporting full availability searches. • Devise regional and global filing programs. • Advise on IP clauses of agreements. • Manage contentious matters before the Registry (active and passive oppositions and cancellations), the courts (infringement, litigation and cancellation actions) and cease and desist letters, domain name takedown notices, UDRPs and customs seizures. • Manage and prosecute our trademark portfolio, by handling significant registry objections such as non-distinctiveness and relative ground objections. • Support the business in relation to other IP related projects such as licenses and assignments, trademark portfolio audits, copyright and domain name matters. • Providing IP compliance training to market lawyers and marketing teams. Required skills: • Qualified solicitor with IP experience focused on trademarks, designs, domain names and copyright or a Trademark Attorney • Experience in multijurisdictional trademark portfolio management and prosecution, including search opinions, trademark prosecution and complex contentious matters • Experience in advising on enforcement matters, trademark, design and copyright infringement • Excellent written communication skills • Confidence in providing complex legal opinions and risk analysis, including trademark infringement assessments • Excellent English language, interpersonal and business counselling skills • IP transactional work desirable, but not essential WHY WORK FOR US? Here are 3 reasons to work for PMI: 1. We’re international: Our global workforce of more than 82,000 is one of our greatest strengths and our employees speak more than 80 languages 2. We’re flexible: your work fits you and not the other way round, thanks to our Flexible Work Arrangement Program; and 3. We’re a certified top employer: This position will advance your experience with innovative technologies, services, and processes. Backed by an attractive salary and compensation package, you will work in a professional setting with clients and team members from all over the world. We are the first multinational company in Switzerland to obtain the Equal-Salary label, for men and women. Philip Morris International: Building a Smoke-Free Future Philip Morris International (PMI) is leading a transformation in the tobacco industry to create a smoke-free future and ultimately replace cigarettes with smoke-free products to the benefit of adults who would otherwise continue to smoke, society, the company and its shareholders. PMI is a leading international tobacco company engaged in the manufacture and sale of cigarettes, smoke-free products and associated electronic devices and accessories, and other nicotine-containing products in markets outside the U.S. PMI is building a future on a new category of smoke-free products that, while not risk-free, are a much better choice than continuing to smoke. Through multidisciplinary capabilities in product development, state-of-the-art facilities and scientific substantiation, PMI aims to ensure that its smoke-free products meet adult consumer preferences and rigorous regulatory requirements. PMI’s smoke-free IQOS product portfolio includes heated tobacco and nicotine-containing vapor products. As of Dec. 31, 2018, PMI estimates that approximately 6.6 million adult smokers around the world have already stopped smoking and switched to PMI’s heated tobacco product, which is currently available for sale in 44 markets in key cities or nationwide under the IQOS brand. For more information, see our PMI and PMIScience websites. PMI is an Equal Opportunity Employer.
  • Contract
    Full-Time
  • Location
    London, United Kingdom
  • Department
    External Affairs
  • Remaining Openings
    1
  • Job ID
    13692
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